DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Amendment filed 2 July 2026 is acknowledged. Claims 31, 35, 37, and 39 have been amended. Claims 21-40 are pending. Claims 21-30 remain withdrawn from consideration.
Information Disclosure Statement
Information disclosure statement filed 2 July 2026 has been fully considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 42 described in at least para. [0057]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendments to paragraph [0048] of the specification filed 2 July 2026 are objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “In some examples, a thin protective layer insulator layer 26 may be formed on the graphene layer 16, e.g. on the side of graphene layer 16 opposite to dielectric layer 18. Example materials from which the thin protective insulator layer 26 may be formed include silicon dioxide (SiO2), aluminum oxide (Al2O3), hafnium oxide (HfO2), or the like.” Paragraph [0048] of the specification as originally filed disclosed, “Although not shown in FIG. 3(b), a thin protective insulator layer may be formed on graphene layer 16.” The original specification explicitly stated that the thin protective insulator layer was not shown. There is no suggestion in the disclosure as originally filed that element 26 of FIG. 3(b) is a thin protective insulator layer.
Applicant is required to cancel the new matter in the reply to this Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 31-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-8, 11, 12, 14, and 16-18 of U.S. Patent No. 11,561,192. Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claim 31, U.S. Patent No. 11,561,192 claims a quantum capacitance based medical sensor as claimed, comprising:
a sensor element (“a sensor”) comprising a graphene layer (“a graphene layer”) (claim 1, clauses 1 and 5; claim 11, clauses 2 and 6); and
a layer of molecules (“a layer of molecules”) attached to the grapheme layer via pi-pi interactions (claim 1, clause 6; claim 11, clause 7),
wherein quantum capacitance of the sensor element (“quantum capacitance varactor”) changes in response to exposure of the sensor element to a sample (claim 1, clauses 2 and 7; claim 11, clauses 3 and 8).
With respect to claim 32, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element further comprises a dielectric layer (“dielectric layer”) under the graphene layer (claim 1, clauses 3-5; claim 11, clauses 4-6).
With respect to claim 33, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element further comprises an insulator layer (“insulator layer”) under the dielectric layer (claim 1, clauses 3-5; claim 11, clauses 4-6).
With respect to claim 34, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element further comprises a gate electrode (“gate electrode”) between the insulator layer and the dielectric layer, wherein the gate electrode is a multi-finger structure comprising at least two gate electrode fingers (claims 6 and 16).
With respect to claim 35, U.S. Patent No. 11,561,192 claims wherein quantum capacitance of the graphene layer changes in response to collection of electrons in the graphene layer upon exposure to the sample (claim 1, clauses 2 and 7; claim 11, clauses 3 and 8).
With respect to claim 36, U.S. Patent No. 11,561,192 claims wherein the graphene sensor element is a graphene quantum capacitance varactor (claim 1, clause 2; claim 11, clause 3).
With respect to claim 37, U.S. Patent No. 11,561,192 claims further comprising a readout circuit (“a readout circuit”) responsive to the quantum capacitance of the graphene layer and configured to output a signal indicative of the electrical charge (claims 4 and 14).
With respect to claim 38, U.S. Patent No. 11,561,192 claims wherein the sensor element has an equivalent oxide thickness (EOT) of less than about 5 nanometers (nm) (claims 7 and 17).
With respect to claim 39, U.S. Patent No. 11,561,192 claims wherein the sensor element has a quantum capacitance modulation ratio of greater than about 1.2 (claims 8 and 18).
With respect to claim 40, U.S. Patent No. 11,561,192 claims wherein molecules of the layer of molecules comprise a pyrene group (claims 2 and 12).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 31, 32, 35, 36, and 38-40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee et al. (US Patent Application Publication 2012/0220053, hereinafter Lee ‘053) of record in view of Xia et al. (“Measurement of the Quantum Capacitance of Graphene,” hereinafter Xia).
With respect to claim 31, Lee ‘053 teaches (FIG. 2C) a quantum capacitance based medical sensor substantially as claimed, comprising:
a sensor element (101) comprising a graphene layer (108) ([0027, 0029, 0031]); and
a layer of molecules (109) attached to the graphene layer (108) via pi-pi interactions ([0031]).
Thus, Lee ‘053 is shown to teach all the features of the claim with the exception of wherein quantum capacitance of the sensor element changes in response to exposure of the sensor element to a sample.
However, Xia teaches (FIGs. 1 and 2) measuring changes in quantum capacitance of a graphene-based device as a function of gate potential (p. 505, col. 2, ln. 30 – p. 506, col. 1, ln. 20). Lee ‘053 senses biomarkers based upon change in electrical conductance ([0009, 0035]), which is also a function of gate potential ([0051]). Thus, one of ordinary skill in the art, based on the combined teachings of Lee ‘053 and Xia, could detect biomarkers based upon changes in quantum capacitance in response to exposure of the sensor element to a sample.
It is noted that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, claimed properties or functions are presumed to be inherent. In re Best, 195 USPQ 430, 433 (CCPA 1977). It has also been held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 15 USQP2d 1655, 1658 (Fed. Cir. 1990). In this case, the quantum capacitance of the sensor element of Lee ‘053 and Xia would inherently change in response to exposure of the sensor element to a sample because the sensor is made of a graphene layer having a layer of molecules attached thereto via pi-pi interactions, which is the same as the sensor as disclosed. The quantum capacitance of graphene, and changes thereto in response to exposure to a sample, is an inherent property of the graphene layer.
Still further, the limitation, “wherein quantum capacitance of the sensor element changes in response to exposure of the sensor element to a sample,” is a functional recitation. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed quantum capacitance of the sensor element of Lee ‘053 changing in response to exposure of the sensor element to a sample as taught by Xia to detect biomarkers.
With respect to claim 32, Lee ‘350 teaches wherein the graphene sensor element further comprises a dielectric layer (102) under the graphene layer (108) ([0027]).
With respect to claim 35, Lee ‘053 and Xia teach the device as described in claim 31 above, but primary reference Lee ‘053 does not explicitly teach the additional limitation wherein quantum capacitance of the graphene layer changes in response to collection of electrons in the graphene layer upon exposure to the sample.
However, Xia teaches (FIGs. 1 and 2) measuring changes in quantum capacitance of a graphene-based device as a function of gate potential (p. 505, col. 2, ln. 30 – p. 506, col. 1, ln. 20). Lee ‘053 senses biomarkers based upon change in electrical conductance ([0009, 0035]), which is also a function of gate potential ([0051]). This change in electrical conductance is in response to collection of electrons in the graphene layer upon exposure to the sample. Thus, one of ordinary skill in the art, based on the combined teachings of Lee ‘053 and Xia, could detect biomarkers based upon changes in quantum capacitance in response to exposure of the sensor element to a sample.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed quantum capacitance of the graphene layer of Lee ‘053 and Xia changing in response to collection of electrons in the graphene layer upon exposure to the sample as taught by Xia to detect biomarkers.
With respect to claim 36, Lee ‘053 and Xia teach the device as described in claim 31 above, but primary reference Lee ‘053 does not explicitly teach the additional limitation wherein the graphene sensor element is a graphene quantum capacitance varactor.
However, Lee ‘053 teaches a graphene sensor (101) ([0027]) to detect different biomarkers in a sensitive and selective manner ([0057]). Further, Xia teaches (FIGs. 1 and 2) measuring changes in quantum capacitance of a graphene-based device as a function of gate potential (p. 505, col. 2, ln. 30 – p. 506, col. 1, ln. 20). In combination, Lee ‘053 and Xia teach a graphene quantum capacitance varactor because Lee ‘053 and Xia teach all the elements of the claim.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the graphene sensor element of Lee ‘053 and Xia as a graphene quantum capacitance varactor as taught by Lee ‘053 and Xia to detect different biomarkers in a sensitive and selective manner.
With respect to claims 38 and 39, Lee ‘053 teaches wherein the sensor element (101) has an equivalent oxide thickness (EOT) of less than about 5 nanometers (nm) ([0029, 0031]); and wherein the sensor element (101) has a quantum capacitance modulation ratio of greater than about 1.2 ([0029, 0031]).
It is noted that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, claimed properties or functions are presumed to be inherent. In re Best, 195 USPQ 430, 433 (CCPA 1977). It has also been held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 15 USQP2d 1655, 1658 (Fed. Cir. 1990). In this case, the sensor element of Lee ‘053 would inherently have the properties of an equivalent oxide thickness (EOT) of less than about 5 nanometers (nm) and a quantum capacitance modulation ratio of greater than about 1.2 because the sensor element is made of graphene having a layer of pyrene group molecules attached thereto, which is the same as the sensor element as disclosed.
With respect to claim 40, Lee ‘053 teaches wherein molecules of the layer of molecules (109) comprise a pyrene group ([0031]).
Claim 33 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee ‘053 and Xia as applied to claim 32 above, and further in view of Kobayashi (US Patent Application Publication 2011/0057168, hereinafter Kobayashi ‘168) of record.
With respect to claim 33, Lee ‘053 and Xia teach the device as described in claim 32 above with the exception of the additional limitation wherein the graphene sensor element further comprises an insulator layer under the dielectric layer.
However, Kobayashi ‘168 teaches (FIG. 1B) a graphene sensor element comprising an insulator layer (12) under a dielectric layer (15) ([0085, 0087]) in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes ([0018]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the graphene sensor element of Lee ‘053 and Xia further comprising an insulator layer under the dielectric layer as taught by Kobayashi ‘168 in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes.
Claim 34 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee ‘053, Xia, and Kobayashi ‘168 as applied to claim 33 above, and further in view of Kan et al. (US Patent Application Publication 2004/0256655, hereinafter Kan ‘655) of record.
With respect to claim 34, Lee ‘053, Xia, and Kobayashi ‘168 teach the device as described in claim 33 above, but primary reference Lee ‘053 does not explicitly teach the additional limitation wherein the graphene sensor element further comprises a gate electrode between the insulator layer and the dielectric layer, wherein the gate electrode is a multi-finger structure comprising at least two gate electrode fingers.
However, Kobayashi ‘168 teaches (FIG. 1B) a graphene sensor element comprising a gate electrode (14) between an insulator layer (12) and a dielectric layer (15) ([0085, 0087]) in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes ([0018]).
Further, Kan ‘655 teaches (FIGs. 1 and 2) a sensor comprising a multi-finger gate electrode structure (120 or 210) comprising at least two gate electrode fingers (e.g. 130, 135, and 140; or 227-229) ([0018, 0025]) to provide selective receptivity ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the graphene sensor element of Lee ‘053, Xia, and Kobayashi ‘168 further comprising a gate electrode between the insulator layer and the dielectric layer as taught by Kobayashi ‘168 in an arrangement that suppresses variation of electrical resistance values of the sensing layer provided between the electrodes; and to have formed the gate electrode of Lee ‘053, Xia, and Kobayashi ‘168 as a multi-finger structure comprising at least two gate electrode fingers as taught by Kan ‘655 to provide selective receptivity.
Claim 37 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee ‘053 and Xia as applied to claim 31 above, and further in view of Chou et al. (US Patent Application Publication 2006/0029994, hereafter Chou ‘994) of record.
With respect to claim 37, Lee ‘053 and Xia teach the device as described in claim 31 above with the exception of the additional limitation further comprising a readout circuit responsive to the quantum capacitance of the graphene layer and configured to output a signal indicative of the electrical charge.
However, Chou ‘994 teaches (FIG. 4) a readout circuit (36) to obtain a response from a biosensor (33) ([0038]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have formed the medical sensor of Lee ‘053 and Xia further comprising a readout circuit responsive to the capacitance of the graphene layer and configured to output a signal indicative of the electrical charge as taught by Chou ‘994 to obtain a response from the sensor.
Response to Arguments
Applicant’s amendments to paragraph [0057] of the specification are insufficient to overcome the objection to the drawings for failing to include reference sign 42 mentioned in the description made in the non-final rejection filed 4 March 2026. Despite Applicant’s additional description, reference sign 42 remains absent from the drawings. The objection to the drawings for failing to include reference sign 42 mentioned in the description is maintained as above set forth.
Applicant’s amendments to paragraph [0048] of the specification are sufficient to overcome the objection to the drawings for including reference character 26 not mentioned in the description made in the non-final rejection filed 4 March 2026. The objection to the drawings for including reference character 26 has been withdrawn. However, these amendments to paragraph [0048] of the specification introduce new matter and are objected to for the reasons above set forth.
Applicant’s amendments to the claims fail to overcome the nonstatutory double patenting rejection of claims 31-40 made in the non-final rejection filed 3 March 2026. Further, Applicant has not supplied arguments traversing the aforementioned rejection. The nonstatutory double patenting rejection of claims 31-40 is maintained as above set forth.
Applicant’s arguments with respect to the Long ‘350 reference and to the combination of Lee ‘053 and Long ‘350 have been considered but are moot because the new ground of rejection does not rely on Long ‘350.
Applicant's arguments filed 2 July 2026 with respect to the 35 U.S.C. 103 rejection of claim 31, and specifically to the Lee ‘053 reference, have been fully considered but they are not persuasive.
Applicant argues (remarks, pp. 7-8) that Lee ‘053 fails to teach or suggest operating the graphene layer in a quantum-capacitance limit or measuring a change in quantum capacitance as amended. Lee ‘056 repeatedly explains that the detection mechanism is based on measuring conductance, not capacitance. Examiner respectfully disagrees.
Examiner notes that the claims are directed to a device, not to a method of use. The limitation, “wherein quantum capacitance of the sensor element changes in response to exposure of the sensor element to a sample,” is a functional recitation. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). To satisfy this limitation of the claim, the sensor element must merely be capable of having a quantum capacitance that can change in response to exposure of the sensor element to a sample. The capacitance of the graphene layer acting as the gate electrode is a function of the gate voltage that is affected by the binding of biomarker samples ([0035]). The graphene layer (108) may be as thin as 5 nm ([0025, 0046]) where quantum effects may occur. The preponderance of evidence suggests, for the purposes of a prima facie determination of obviousness, that the sensor of Lee ‘053 is capable of exhibiting a quantum capacitance that can change in response to exposure of the sensor element to a sample.
Further, Xia teaches (FIGs. 1 and 2) measuring changes in quantum capacitance of a graphene-based device as a function of gate potential (p. 505, col. 2, ln. 30 – p. 506, col. 1, ln. 20). Lee ‘053 senses biomarkers based upon change in electrical conductance ([0009, 0035]), which is also a function of gate potential ([0051]). Thus, one of ordinary skill in the art, based on the combined teachings of Lee ‘053 and Xia, could detect biomarkers based upon changes in quantum capacitance in response to exposure of the sensor element to a sample.
Still further, the quantum capacitance of the sensor element of Lee ‘053 and Xia would inherently change in response to exposure of the sensor element to a sample because the sensor is made of a graphene layer having a layer of molecules attached thereto via pi-pi interactions, which is the same as the sensor as disclosed. The quantum capacitance of graphene, and changes thereto in response to exposure to a sample, is an inherent property of the graphene layer. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, claimed properties or functions are presumed to be inherent. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Deen et al. (“Graphene-Based Quantum Capacitance Wireless Vapor Sensors”) teaches a quantum capacitance-based sensor.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christopher M. Roland whose telephone number is (571)270-1271. The examiner can normally be reached Monday-Friday, 10:00AM-7:00PM Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yara Green can be reached at (571)270-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.R./Examiner, Art Unit 2893
/YARA B GREEN/Supervisor Patent Examiner, Art Unit 2893
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